Tommy Bahama Group, Inc. v. Domains by Proxy, Inc. / Aware Marketing

Case No. D2011-2127

1. The Parties

Respondent is DomainsByProxy.com of Scottsdale, Arizona, United States and Aware Marketing of Scottsdale, Arizona, United States, represented by Lewis and Roca LLP, United States.

2. The Domain Name and Registrar

The contested domain name <tommybahamasucks.com> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 5, 2011. On December 6, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the contested domain name. On December 6, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the contested domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on December 8, 2011 providing the registrant and contact information disclosed by GoDaddy.com, Inc., and inviting the Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 9, 2011.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 12, 2011. In accordance with the Rules, paragraph 5(a), the due date for the Response was January 1, 2012. The Response was filed with the Center on December 30, 2011.

The Center appointed Gary J. Nelson as the sole panelist in this matter on January 17, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant owns numerous United States trademark registrations for TOMMY BAHAMA. The earliest issued TOMMY BAHAMA trademark registration in the United States is dated November 2, 1993. Complainant changed its name from Viewpoint International, Inc. to Tommy Bahama Group, Inc. in April 2005. Complainant owns and operates the website at “www.tommybahama.com”.

The contested domain name, <tommybahamasucks.com> was registered with GoDaddy.com on September, 30, 2011. Respondent was aware of Complainant when Respondent registered the <tommybahamasucks.com> domain name. At the time of this Decision, the website associated with the <tommybahamasucks.com> domain name does not reference Complainant, and does not criticize Complainant.

5. Parties’ Contentions

A. Complainant

Since at least as early as 1993, Complainant has continuously and exclusively used the trademark and service mark TOMMY BAHAMA (the TOMMY BAHAMA mark) in connection with its upscale island-inspired apparel and related accessories. Over the years, Complainant has expanded its TOMMY BAHAMA line of products to include a “lifestyle” line of island-inspired accessories, including, but not limited to, footwear, swimwear, sunglasses, eyewear, watches, wallets, bedding, sporting goods, fragrances, personal care products, and home furnishings.

Complainant presently operates more than ninety eight TOMMY BAHAMA retail stores for its apparel and accessories in locations throughout the United States and through various arrangements in sixteen international retail stores in Australia, Canada and Dubai. Complainant also employs a network of independent sales representatives who are authorized to sell TOMMY BAHAMA apparel and accessories to various other retail outlets and corporate accounts, including resorts and spas, hotels, golf pro shops, and upscale department store chains, such as Macy’s, Nordstrom, Hudson’s Bay Trading Co., Belk and Von Maur. In fiscal year 2010, Complainant’s net sales of Tommy Bahama goods and services approximated USD398 million. In fiscal years 2008 and 2009, Complainant’s net sales of Tommy Bahama goods and services approximated USD421 and USD363 million, respectively.

As a complement to Complainant’s retail stores, Complainant operates a heavily trafficked, interactive website at the domain name <tommybahama.com>. This website features information about TOMMY BAHAMA apparel and accessories, retail store and restaurant locations, and customer services and product care information.

Complainant has spent tens of millions of dollars promoting and marketing its goods and services under the TOMMY BAHAMA mark, and these goods and services have received an enormous amount of publicity in the United States and throughout the world. As a result, goods and services sold in connection with the TOMMY BAHAMA mark are recognized worldwide as being associated with Complainant, and the TOMMY BAHAMA mark and its associated goodwill are assets of substantial value to Complainant.

As a result of Complainant’s continuous and exclusive use of the TOMMY BAHAMA mark in commerce, Complainant owns valid and enforceable trademark and service mark rights in the TOMMY BAHAMA mark. In recognition of these rights, the United States Patent and Trademark Office (“USPTO”) has issued Complainant more than forty-five registrations for marks that consist in whole or in part of the TOMMY BAHAMA mark, including Reg. No. 3,198,912 of TOMMY BAHAMA for “camp shirts; golf shirts; hats; jackets; knit shirts; neckwear; pants; polo shirts; shirts; shoes; shorts; sweaters” and Reg. No. 2,492,771 of TOMMY BAHAMA for “retail store services featuring clothing and general consumer goods.” Complainant’s registrations are valid and subsisting in law, were duly and legally issued, are prima facie evidence of the validity of the marks registered, and constitute constructive notice of the ownership of these marks by Complainant.

Complainant also owns numerous registrations for its TOMMY BAHAMA mark around the world, including in Australia, the Bahamas, Canada, China, the European Union, Japan, Mexico, Peru and the Philippines. To Complainant's knowledge, no other person or entity anywhere in the world has a legitimate right to use the TOMMY BAHAMA mark in any form or manner.

Complainant established its undisputed trademark rights in TOMMY BAHAMA prior to the date Respondent registered the <tommybahamasucks.com> domain name.

The <tommybahamasucks.com> domain name is confusingly similar to the TOMMY BAHAMA mark.

Respondent knew of Complainant, or had constructive knowledge of Complainant, when Respondent registered the contested domain name.

There has never been a relationship between Complainant and Respondent, and Complainant has not licensed, given permission or any other right to Respondent to use the TOMMY BAHAMA mark by itself or in a domain name. Respondent cannot demonstrate or establish rights or legitimate interests in the contested domain name.

Respondent registered and is using the <tommybahamasucks.com> domain name in bad faith.

B. Respondent

The <tommybahamasucks.com> domain name is not confusingly similar to Complainant's TOMMY BAHAMA mark, Respondent owns legitimate rights and interests in the contested domain name, and it did not register and is not using the contested domain name in bad faith.

The addition of “sucks” to TOMMY BAHAMA to form <tommybahamasucks.com> is sufficient to avoid confusingly similarity.

Complainant filed its Complaint only two months after the contested domain name was registered, and that was an insufficient time period for Respondent to bring its “criticism” site online, and Respondent has every intention to operate a “criticism” site at “www.tommybahamasucks.com”.

Respondent does not receive financial compensation from the “parked” website at “www.tommybahamasucks.com” and the website is a legitimate noncommercial and fair use of the contested domain name.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

This decision is based on the Complaint (and the properly filed Amended Complaint) submitted by Complainant, and the Response submitted by Respondent, and all referenced Exhibits and Appendixes. The Panel notes the Response was not signed, but will nevertheless treat the Response as if it had been signed by the attorneys representing Respondent.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(i) The domain name in issue is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in the contested domain name; and

(iii) The domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant is the owner of numerous United States trademark registrations for TOMMY BAHAMA, and these registrations issued prior to the date the contested domain name was registered (i.e., September 30, 2011). Therefore, Complainant has established rights in the TOMMY BAHAMA mark pursuant to paragraph 4(a)(i) of the Policy. See Janus Int’l Holding Co. v. Scott Rademacher,
WIPO Case No. D2002-0201 (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption).

The Panel notes Respondent acknowledges that Complainant owns United States trademark registrations for TOMMY BAHAMA, and has not challenged Complainant’s ownership of this trademark.

Nevertheless, Respondent argues that the tacking on of the word “sucks” to “tommy bahama” to form <tommybahamasucks.com> is sufficient to avoid confusing similarity. While this argument is certainly not frivolous, and while the UDRP administrative decisions have not been one hundred percent consistent on this point, the majority of decisions have held that a domain name in the form of “[trademark]sucks.com”, is confusingly similar to the relevant trademark. This panel agrees with the consensus view, and holds that <tommybahamasucks.com> is confusingly similar to Complainant’s TOMMY BAHAMA mark. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,
WIPO Case No. D2000-0662 (holding <wal-martsucks.com to be identical or confusingly similar to the WAL-MART trademark); see also Societé Air France v. MSA, Inc.,
WIPO Case No. D2007-0143 (holding <airfrancesuck.com> confusingly similar to the AIR FRANCE trademark).

Complainant has proven the requirement of Policy, paragraph 4(a)(i) in regard to the <tommybahamasucks.com> domain name.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

There is a split amongst the UDRP panels as to whether the combination of the word “sucks” with a trademark (e.g., <trademarksucks.com>) can establish a legitimate use of, or right in, that trademark.

One source of inconsistency is related to the question of which country’s laws will apply to the UDRP cases being decided. The answer to this inquiry can often be dispositive of the case. See Howard Jarvis Taxpayers Association v. Paul McCauley,
WIPO Case No. D2004-0014 (discussing the apparent split of UDRP panel decisions from a perspective of underlying national laws). This Panel also recognizes that the “criticism” cases appear explainable based on this perspective. For example, outside the United States, many Panels (but not all) have adopted the view that the right to criticize does not extend to registering a domain name that is identical or confusingly similar to the owner’s registered trademark or conveys an association with the mark. See The Royal Bank of Scotland Group plc, National Westminster Bank plc A/K/A NatWest Bank v. Personal and Pedro Lopez,
WIPO Case No. D2003-0166 (holding that respondent did not have a right or legitimate interest in <natwestbanksucks.com> when complainant had established trademark rights in NATWEST BANK and ordering the transfer of the domain name).

On the other hand, inside the United States, many panels have taken a different view and held that a respondent has a legitimate interest in using another’s trademark as part of the domain name for a criticism site if the use is fair and noncommercial. See Sermo, Inc. v. CatalystMD, LLC,
WIPO Case No. D2008-0647 (holding that respondent had a right or legitimate interest in the <sermosucks.com> domain name and denying the requested transfer of ownership). In regard to these “criticism” decisions in favor of a respondent, panels often justify their ultimate conclusion by referring to the free speech right under the United States Constitution. See WIZZ Air Hungary Airlines Limited Liability Company v. Holden Thomas,
WIPO Case No. D2009-1105.

It is clear to the Panel that choosing to decide this case in accordance with principles of the United States law will tend to favor Respondent, assuming Respondent is making a legitimate noncommercial or fair use of the domain name. On this point, and because both the Complainant and the Respondent appear to reside in the United States, the Panel decides to indeed decide this case using United States trademark law.

Another preliminary issue important to this case is the question of which party has the burden of proof. The Panel notes that Respondent aggressively denies it has the burden to prove it has established rights or legitimate interests in the <tommybahamasucks.com> domain name.

Under paragraph 4(a)(ii) of the Policy, Complainant is required to establish a prima facie case that Respondent does not have any rights or legitimate interests in the contested domain name. See TotalFinaElf E&P USA, Inc. v. Marylin Farnes, NAF Claim No. 117028 (“In order to bring a claim under the Policy, Complainant must first establish a prima facie case. Complainant’s [initial burden] is to provide proof of valid, subsisting rights in a mark that is similar or identical to the domain name in question”). The practical result of Complainant having successfully established prior rights in a trademark with which the contested domain name is confusingly similar, and having successfully alleged that Respondent does not have a legitimate right or interest in the domain name, is the shifting of the burden to Respondent to demonstrate it has legitimate rights or interests in the contested domain name. See Do The Hustle, LLC v. Tropic Web,
WIPO Case No. D2000-0624 (holding that once the complainant assets that the respondent has no rights or legitimate interest with respect to the domain name, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name”); see also G.D. Searle & Co. v. Martin Marketing., NAF Claim No. 118277 (“Because Complainant's Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent”).

This case ultimately turns on the quality of Respondent’s evidence. In this regard, however, the Panel notes Respondent has not submitted any evidence that it has established a right or legitimate interest in the <tommybahamasucks.com> domain name. In the end, this lack of evidence proves fatal for Respondent.

While the attorney for Respondent does allege that Respondent has plans to create a criticism site at “www.tommybahamasucks.com” this assertion is not evidence because attorney argument is not evidence. In this context, the Panel is forced to question the accuracy of Respondent’s assertion. If Respondent did indeed have a legitimate intent to create a criticism site, then the Panel believes Respondent most likely had documentary evidence detailing the preparation of the site and could have submitted these documents as evidence in support of its allegation. On the other hand, the fact Respondent did not submit any evidence on this point tends to undermine Respondent’s assertion.

Respondent also asserts that it chose to rely on the concerned registrar to create a “parked” website while it developed its criticism site, and that it receives no monetary benefit from click-through opportunities, despite the fact the “parked” website contains click-through options. The Panel notes it is impossible to determine whether this assertion is correct because no evidence has been submitted to verify this claim. However, even assuming the assertion is correct, and Respondent never had an intent to secure commercial gain from the domain name, the “parked” website remains a commercial website with click-through opportunities to existing businesses and is not a noncommercial or fair use of the domain name despite the lack of monetary enrichment to Respondent.

As such, the “parked” website does not establish that Respondent has rights or legitimate interests in the contested domain name. See Rich Products Corporation v. Cynthia Kirk,
WIPO Case No. D2007-0871 (“...it is clear that the Respondent has not rights or legitimate interests in the Domain Name. First, Complainant has shown that the domain name is simply “parked” with the Registrar, in that the Website... does not itself offer any original content of goods or services … The use of a domain name that merely offers links to other websites is not a bona fide offering of goods and services pursuant to paragraph 4(c)(i) of the Policy.”); see also Martha Stewart Living Omnimedia, Inc. v. Domain Deals,
WIPO Case No. D2007-0289 (concluding that the mere “parking” of a domain name does not of itself constitute a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy).

Also, Respondent does not contest Complainant’s allegation that Respondent has no existing formal relationship with Complainant, or that Respondent is not commonly known as Tommy Bahama or <tommybahama.com> or <tommybahamasucks.com>.

Complainant has proven the requirement of Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out the circumstances which shall be evidence of the registration and use of a domain name in bad faith. These circumstances are:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on you website or location.

Paragraph 4(b) of the Policy is not exhaustive and other instances of bad faith might be in evidence. However, in order to rule for Complainant, the Panel must find that Respondent both registered and is using the domain name in bad faith.

In certain circumstances, the maintaining of a “parked” or passive website has been held to support a complainant’s allegation of bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003 (concluding that the respondent's passive holding of the domain name is evidence the domain name was registered and is being used in bad faith).

Once again, the Panel notes that Respondent has submitted no evidence in support of its assertion that it registered the contested domain name for the purpose of creating a criticism website. The Panel therefore finds that the fame of Complainant’s mark, combined with the use of the contested domain name as a parking website in this case, is evidence of bad faith registration and use on the part of Respondent.

Complainant has proven the requirement of Policy, paragraph 4(a)(iii).

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <tommybahamasucks.com> be transferred to the Complainant.